Australia

The dust has finally settled following the introduction of a single patent attorney register for Australia and New Zealand under the Trans-Tasman regime. The public listing of firms remains a major talking point; although it has been confirmed that firms owned by the same holding company can continue to operate separately, there is still uncertainty regarding potential conflicts of interest and issues of split loyalty between shareholders and clients. These concerns prompted the Professional Standards Board for Patent and Trademark Attorneys to commission an independent legal expert to lead a consultation – beginning in April 2017 – to ensure that proper safeguards are introduced. So far, no significant problems have arisen from the consolidations. Another hot topic is the proliferation of low-quality patents, which some commentators believe have been granted too readily. This issue was flagged by the Productivity Commission in December 2016, before it suggested the abolition of innovation patents altogether.

Although Allens works adeptly across the contentious/non-contentious divide, it is best known for its top-class litigation efforts on behalf of blue-chip clients in the life sciences and high-technology realms. The set has a diverse client list which includes established multinationals as well as fledgling companies. In 2015, it formed Allens Accelerate, an initiative which provides cost-effective legal advice to pioneering start-ups; it is also a founding member of non-profit fintech hub Stone & Chalk. The firm’s crack litigators continue to enjoy success in the defence of innovative pharmaceutical companies. Richard Hamer recently won plaudits by preventing Apotex from selling a generic version of Pfizer’s Lyrica product. Similarly, courtroom sharpshooter Sarah Matheson recorded a victory on appeal for GlaxoSmithKline in a dispute with Reckitt Benckiser regarding its Panadol drug; and patent polymath Philip Kerr prevailed on behalf of Bristol-Myers Squibb and Otsuka Pharmaceuticals, obtaining an interlocutory injunction against Generic Health. Outside the healthcare sector, Kerr and time-honoured professional Andrew Wiseman have provided cogent advocacy for the world’s largest supplier of light-emitting diodes, Nichia, in a patent infringement battle with Arrow Electronics. Allens’ prosecutors and portfolio managers also demonstrate consistent quality; of late they have been busy bolstering the portfolios of big players such as Purdue Pharma, Vertex and Mitsubishi.

Ashurst Australia

Masterly in complicated litigation and transactions, Ashurst continues to occupy an exalted position on the Australian marketplace and has played a key role in many recent high-profile cases. Boasting deep scientific know-how, the firm has an especially glittering reputation in the pharmaceuticals sector; it breaks the mould by representing both innovators and generics and is a potent force in biologics and biosimilars disputes. Percipient adviser and assiduous litigator Kellech Smith proved her mettle in a recent conflict between client Apotex and Warner-Lambert: she mounted a successful defence against an interlocutory injunction application and navigated some complex jurisprudential questions regarding the effects of indirect infringement provisions. Sydney-based Ben Miller has spent 20 years perfecting his courtroom technique and licensing negotiation skills; he is the lawyer of choice for originating drugs companies. His colleague Peter Chalk’s in-house experience allows him to see IP problems from patrons’ standpoint; the seasoned enforcer has a bird’s-eye view of contentious matters and deploys tactics with finesse. Patent attorney, lawyer and chemist Grant Fisher offers a rare blend of expertise; he has a particularly impressive client base in the healthcare and IT fields.

Bird & Bird

A long-established player in Europe and Asia, Bird & Bird is now making waves down under, debuting this year in the Australian rankings of the IAM Patent 1000. Seamlessly integrated in the firm’s impressive global network, the local team shapes and implements worldwide patent strategies, as well as executing on major national briefs. Its comprehensive offering assists innovators in protecting, monetising and enforcing their intangible assets. The Sydney-based team is especially accomplished at handling briefs at the intersection of IP and competition law, where it exploits its cross-disciplinary expertise to superb effect. The infinitely experienced Jane Owen heads the team; she has a natural talent for resolving disputes through litigation and transactions.

Clayton Utz

Clayton Utz “knows the Australian market inside out and has a highly client-centred approach to patent services”. The commercial law stalwart has a profound understanding of business and industry-specific needs: its knowledge of the pharmaceuticals sector is hard to beat, with many of its practitioners having spent stints in-house at leading drug companies. According to one peer, “Clayton Utz is one of the few firms you can rely on when embroiled in must-win disputes”; it recently successfully defended Telstra against Upaid Systems’ allegations of infringement, which covered more than 30 products and could have cost A$100 million in damages. The first port of call for many global innovators, John Collins skippers the national IP and technology practice.

Corrs Chambers Westgarth

Intellectual property is a core focus for general practice Corrs Chambers Westgarth, a firm lauded for its “meticulous attention to detail, rapid turnaround times and discerning assessments of different options”. You can “place complete confidence in the firm’s strategically sound advice”, enthuse clients. Offering the flexibility of an independent firm, it also has access to a vast informal network of associates, ensuring that cross-border work is effortlessly handled. A shrewd broker of IP-rich deals, the group is most highly reputed for its steadfast advocacy in contentious circumstances. Corrs is currently acting for Reckitt Benckiser in an infringement spat with GlaxoSmithKline involving abstruse questions centring on omnibus claims and infringement combination patents. The lead partner in this dispute is the “strikingly intelligent” Odette Gourley, a “superb strategist who understands complex matters quickly, is good at balancing costs and benefits and dispenses insightful real-world counsel. She proactively manages a case, keeping things moving while being mindful of events occurring in other jurisdictions. She is also very professional and easy to work with”. Kate Hay has become a lynchpin since joining the firm in 2015; a star performer in the Apple v Samsung smartphone wars, she has a real facility for in international litigation. Hay leads the firm’s life sciences network in Asia. IAM Patent 1000 debutant Stephen Stern has more than three decades’ experience to draw upon; he has resolved disagreements in every conceivable technology sector. On the transactional side, commercial sage Eddie Scuderi recently got a multifaceted licensing and R&D agreement inked for Sucrogen.

Australia’s largest IP specialist, Davies Collison Cave is an outstanding one-stop shop. Supported by cutting-edge back-office systems, its patent group is the country’s most prolific filer and oversees cross-border prosecution campaigns for a litany of prestigious clients. The outfit also continues to make an impact in Southeast Asia; its Singapore contingent has more than doubled in size over the past two years. Michael Caine is a compelling choice on the non-contentious side. The gifted prosecutor captains the firm’s organic chemistry and pharmaceuticals group; he recently provided crucial technical support for Novartis in patent litigation and successfully defended Gilead against an opposition. Another biotechnology and chemistry aficionado, Bill Pickering thrives at global portfolio development; immunology and genetics are his niches. For those with electronics, IT and telecommunications inventions, Richard Brown is a prime pick; the talented drafter also dispenses illuminating advice and is a staunch representative in opposition proceedings. David Webber has been obtaining IP rights for over two decades; he also lectures on patent and copyright law at the University of Melbourne and Monash University. With extensive industry experience, Rodney De Boos maximises the commercial value of patents through judicious licensing agreements and other transactions. The firm’s law group assists in the resolution of seemingly intractable disputes across a number of technology areas. Spearheading the litigation team in Sydney is Paul Dewar, who regularly appears in the federal courts and is famed for his pharmaceutical work. He has unrivalled awareness of the differences between jurisdictions around the world. “Paul learns the details of a case quickly, works well with witnesses and is very skilled in defending his depositions.” His colleague Ian Pascarl was previously the chair of the Law Council of Australia’s IP Committee and brings tactical nous to enforcement campaigns; he recently won judgments of validity and infringement for Bayer against Generic Health and Lupin. Supplying additional contentious clout is luminary Richard Jarvis, widely regarded as “one of the most excellent patent litigators in Australia”.

DibbsBarker

DibbsBarker shines brightest when tackling complex litigation and shepherding IP-rich deals to close. “Innovative, easy to deal with, strategic and pragmatic”, the firm takes a client-centric, business-conscious approach to patent mandates; industry experience and technical expertise allow it to speak its patrons’ language. These qualities are embodied by Robert McInnes, who has a flair for monetising intangible assets; he is especially skilled at drafting and negotiating patent licences and is among the select few Australian practitioners to have passed the US certified licensing professional qualification. In a recent highlight, he advised QIMR Berghofer on its exclusive licence and research agreements with Atara Bio. Life sciences hotshot Scott Sloan also packs a punch in patent conflicts; he “runs a case efficiently, drawing on dazzling legal knowledge and honed strategic instincts”. Another string to Sloan’s bow is his aptitude for unfair competition matters.

DLA Piper Australia

Global powerhouse DLA Piper has a streamlined yet formidable IP team in Australia. Split between Sydney and Melbourne, the ensemble has a laser focus on contentious matters and is a feared adversary of patent trolls. Relentless in battle, the set also knows how to resolve disputes through creative licensing and settlement agreements. “One of the very best practitioners in the country”, polished courtroom performer Nicholas Tyacke has practised extensively in the United States as well as Australia. Tyacke is especially accomplished in life sciences matters – Pfizer is one of his loyal clients – and has worked on cases involving nine pharmaceutical products in the past year alone. His colleague Robynne Sanders co-chairs DLA Piper’s worldwide patent litigation group; engineering, IT and medical devices are her fortes.

FAL Lawyers

Appreciative of its commercially attuned advice and intimate familiarity with multiple industry sectors, a wide array of clients – including universities, government agencies and life sciences players – entrust FAL Lawyers with their critical IP transactions. Leveraging on her experience at the Commonwealth Scientific and Industrial Research Organisation, Jenni Lightowlers is renowned for her stellar strategic work with research institutions; corporate structuring, R&D agreements and licensing are her strong suits. Fellow founding partner Peter Francis makes light work of technology commercialisation briefs.

FB Rice

Boutique FB Rice has a talent for procuring impenetrable patent protection and building portfolios which provide real commercial advantage; it is also adept in opposition hearings and supplies first-class technical support during litigation. Its tailor-made services attract a steady stream of instructions from global corporations and fledgling enterprises alike. Brett Lunn commands the team with poise; his panoramic perspective of intellectual property translates into intelligent strategic counsel on the most challenging prosecution questions. Drafting biotechnology patents with dexterity are Jenny Petering – a senior fellow in the Melbourne Law Masters – and biology PhD Ian Rourke, who has unsurpassed know-how in his field and is also a shrewd manager of international portfolios.

A broad spectrum of scientific proficiency has enabled Fisher Adams Kelly Callinans to become one of Australia’s largest filers of originating patent and Patent Cooperation Treaty applications. The firm has an impressive track record of securing IP rights in challenging areas, such as computer-implemented business methods and genetics-based inventions. With a dedicated Asia hub based in Brisbane, the ensemble is also an appealing option for clients with interests in over 20 Asian jurisdictions. Not simply a well-oiled machine, the firm offers a personal touch, getting to know its patrons’ businesses and partnering with them to achieve strategic objectives. Physicist Ernest Graf is a name for the address book.

FPA Patent Attorneys

A purveyor of polished prosecution services, FPA Patent Attorneys is also a trusted adviser in contentious circumstances, often working hand in hand with associate law firm Herbert Smith Freehills. It is a redoubtable ally for an assortment of prestigious clients – including Monash University, Xtralis Global, Caterpillar and Gilead – helping them to negotiate obstacles to IP protection and avoid unnecessary disputes. According to one patron, FPA’s team provides “excellent value for money, consistently making major contributions to our business”. The firm continues to strengthen its offering; in 2016 it appointed two new principals and three new vice principals and expanded its presence in Southeast Asia. Biotechnology ace and managing director James Cherry handles patent procurement for a host of heavyweight clients; he is also a go-to professional for international technology transfers. Another life sciences whizz, Karen Bentley is equally capable drafting patents as she is pleading in opposition hearings. “Extremely experienced” prosecutor Tom Gumley has a “fine-tuned knowledge of patent and pharmaceutical law. He always goes the extra mile with his work”. Celebrated engineer John Dower is a registered patent agent in Australia, New Zealand and South Africa; he drafts with precision and dispenses salient pre-litigation advice. Oppositions wizard Carl Harrap debuts in the IAM Patent 1000 this year on the back of superb feedback from patrons: “Carl is one of the best attorneys out there; he is extremely smart and quick to grasp difficult technological concepts. He can’t be recommended highly enough.”

Griffith Hack

Griffith Hack has all angles covered for patent owners, with a joined-up practice spanning prosecution, litigation and transactions. For many years Griffith was one of the country’s biggest filers; it excels in highly complex drafting tasks and provides game-changing insight with its innovative patent analytics service. The firm recently established a new IP economics group which is helping clients to consolidate their market position and increase revenues. Perceptive prosecutor Nick Mountford is quick to identify the commercial potential of inventions – and knows how best to protect them. Software, computing and telecommunications are happy hunting grounds for him. Benefiting from substantial industry experience, Janelle Borham is an anchor of the life sciences and chemicals practice; she works alongside Rosie Stramandinoli, who is a dab hand in oppositions and re-examinations, as well as patent preparation. The team ensures that potential enforcement scenarios are considered at the prosecution stage, so when intellectual property is infringed, it can quickly and effectively act to defend clients’ rights. During a 30-year career, hotshot litigator Wayne Condon has made infringement and revocation proceedings his metier. Appearing for the first time in the IAM Patent 1000, Derek Baigent is repeatedly called on to handle must-win disputes on behalf of electronics and telecommunications clients. For sure-footed work on patent licences, corporate acquisitions and joint venture agreements, the veteran Russell Berry is a prudent choice.

Herbert Smith Freehills LLP

“Top-tier international firm” Herbert Smith Freehills is a safe pair of hands for bet-the-farm litigation; having played a pivotal role in the smartphone wars, it continues to notch up victories in crucial patent spats. The outfit lately prevailed in a landmark High Court battle between client Apotex and AstraZeneca, which clarified the law surrounding inventive step. It also succeeded in having Idenix’s Australian hepatitis C drug patent revoked on behalf of Gilead. The silver-tongued Shaun McVicar played a key role in this triumph; he is a pharmaceuticals maven with a flair for cross-border litigation. IP principal Sue Gilchrist is another dependable adviser for major multinationals, including Apple; she chairs the Law Council of Australia’s IP Committee. Adding additional firepower, Rebekah Gay can effortlessly resolve conflicts in the life sciences and energy sectors; while a solid scientific grounding and years in industry mean that Patrick Sands can confidently deliver across all disciplines. Commercialisation pro Kristin Stammer helps to extract maximum IP value in deals across Asia, Europe, North America and the Middle East.

Jones Day

The small but perfectly formed Australian outpost of Jones Day punches above its weight in high-stakes pharmaceutical patent disputes; the latest in a series of milestone trials saw the team represent Myriad Genetics in a High Court case which involved the first ruling on the patentability of genetic material. Leading the squadron into battle are robust litigators Lisa Taliadoros and Anthony Muratore. Clients laud their ability “to get up to speed with technology quickly and to craft persuasive legal arguments”. Formerly a research scientist at the Commonwealth Science and Industrial Research Organisation, Taliadoros brings impeccable technical credentials to life sciences briefs; of late she has acted for Biogen in a patent re-examination concerning a drug which makes A$40 million annually from Australia’s Pharmaceutical Benefits Scheme. Fellow champion of innovative drug companies Muratore works faultlessly across borders in multifaceted cases; he is also a deft arbitrator when alternative means are needed to defuse disagreements.

King & Wood Mallesons

Pioneering general practice King & Wood Mallesons demonstrates its encyclopaedic understanding of IP law when executing on litigation and commercialisation mandates, and operates fluently across jurisdictions. A big hit since joining in 2015, Matthew Swinn is an agile performer in trials and appeals; he recently struck an impressive deal for Teva in a dispute with AstraZeneca and is representing Sigma in a significant damages suit against the Commonwealth of Australia. Another courtroom virtuoso, John Swinson has a proclivity for cases involving computer, electrical and mechanical technologies; the versatile practitioner is also an accomplished arbitrator and assured broker of lucrative IP transactions. The similarly well-versed Kim O’Connell has an “excellent legal mind, gets to the heart of the issues very quickly and understands the commercial aspects of litigation. She always remains cool under pressure”. O’Connell is currently representing major pharmaceutical heavyweights Alphapharm, Apotex, Aspen and Sandoz in a spat with Lundbeck. Scott Bouvier’s advice is “always business focused and practical, providing a complete overview of the strengths and weaknesses of each course of action. His varied experience proves valuable in both contentious and non-contentious matters”. He recently provided infallible leadership in a patent licensing suit between client the University of Sydney and ObjectiVision, and helped renewable energy start-up Evergen to raise funds and conclude licensing agreements for its innovations.

Madderns

South Australia’s largest IP agency, Madderns has been providing slick prosecution services for four decades. In recent years it has developed a pre-eminent practice in information technology and engineering, underpinned by the exceptional scientific qualifications – including many PhDs – and deep industry experience of its professionals. Though catering for many prominent corporations, such as semiconductor giant Qualcomm, the firm is predominantly popular with research institutions – it works for many of Australia’s most prestigious universities. Longstanding clients commend Madderns’ “professional, responsive and well-drilled team”. Mainstay Stephen O’Brien makes his debut in the IAM Patent 1000 this year following effusive feedback: “He shows a fantastic ability to understand the uniqueness and inventiveness of particular technologies. He prosecutes excellently; needing little or no guidance, he reviews patent office responses, understands the key issues and advises on how to overcome them. Commercially astute, Stephen also highlights when it is not good value to patent certain things.” As well as being the lynchpin of the ICT group, O’Brien heads up the firm’s burgeoning sports technology division.

Minter Ellison

Minter Ellison is unique among Australian firms: it combines IP agency and law practices, which dovetail neatly together to deliver premium holistic counsel. Contentious maestro Wayne McMaster has impressed in a plethora of life sciences trials; he is currently representing Bristol-Myers Squibb in a ground-breaking biologics battle with Merck and seeking to prevent generic replicas of Mylan’s blockbuster Fenofibrate product from coming to market. Another formidable litigator is Robert Cooper, who recently won a verdict of infringement for Streetworx against Artcraft Urban and then successfully defended the verdict on appeal. In the same dispute, he secured the first springboard injunction in any Australian patent case. Cooper is also involved in a precedent-setting suit for Calidad relating to the unresolved question of patent ‘recycling’. When granular knowledge of pharmaceuticals laws and regulations is required, John Fairbairn is the go-to professional; he is currently defending vital intellectual assets for Bayer New Zealand.

Phillips Ormonde Fitzpatrick

Despite its size, the 110-strong team at Philips Ormonde Fitzpatrick retains a “personal, responsive and flexible approach” when executing on sweeping international patent procurement projects. The firm’s state-of-the-art document systems facilitate efficient and reliable case management, while its ‘four-eyes’ policy ensures that every application meets the highest professional standards. These qualities recently led energy titan Halliburton to transfer a substantial and diverse portfolio to the firm. Former Australian Patents Office examiner and engineering buff Graham Cowin contributes valuable insight when advising on prosecution matters. Other essential contacts include newly appointed managing partner Ross McFarlane and electronics and IT division leader Saskia Jahn, who both feature in the IAM Patent 1000 for the first time this year. “Hands-on professional” McFarlane “invariably has clients’ best interests in mind and displays an acute understanding of how intellectual property fits in with their businesses”; while Jahn is equally brilliant at devising domestic and international IP strategies.

Shelston IP Pty Ltd

The exhaustive patent offering at Shelston is favoured by rights holders of all stripes – it has cultivated more than 3,000 client relationships around the world. Its expansion into Asia is proving hugely successful, as the statistics bear out: Sheldon now processes more Chinese-originating patent applications than any other Australian firm. These achievements are fuelled by the firm’s technical acuity and comprehensive commercial outlook, personified by Grant Shoebridge and Chris Bevitt. Biotechnology PhD Shoebridge has a firm handle on pharmaceutical matters; he is an incisive drafter with a knack for gaining patent term extensions. Bevitt makes sure that clients optimise the value of their intangible assets by offering creative, but rational advice on patent-rich agreements. Managing director Stuart Smith is a far-sighted IP strategist.

Spruson & Ferguson

As the country’s oldest IP law firm, the 128-year-old Spruson & Ferguson continues to build on its well-earned reputation, to superb effect. With 100 professionals stationed in bureaux across Singapore, Thailand, Indonesia, Malaysia and China, as well as Australia, it offers incomparable international reach. Though formidable in hard-fought disputes, the tech-savvy crew is principally sought out for its non-contentious prowess. Former aeronautical engineer Gregg Gurr specialises in complex prosecution mandates; he drafts impeccable mechanical patents which confer real commercial advantages. As one patron extols: “Greg has been one of the key ingredients in our success as a business.” For the masterful handling of disputes, John Afaras is a key contact; he recently navigated multiple intricate procedural issues while representing Telstra in its federal court skirmish with Voxson.

Wrays

“An exceptional team of energetic, diligent and creative people who bring a fresh approach to all aspects of IP work”, Wrays garners acclaim for its all-inclusive offering spanning prosecution, litigation and advisory services. Esteemed for its exemplary work in the mining sector, it also acquits itself well in a variety of technical fields. A long-established frontrunner in Western Australia, the “go-to firm” is undergoing rapid expansion; it recently opened a Melbourne office and significantly strengthened its Sydney unit. “One of the brightest and best patent professionals in the country”, managing principal and chairman Gary Cox is a “particularly gifted leader, strategist and analyst, who makes game-changing contributions to each case. Outstanding in litigation and prosecution, he has a joined-up understanding of the entire patent lifecycle”.

Other recommended experts

Alder IP’s Anthony Alder draws on his in-house and private practice experience when devising “excellently pragmatic” patent solutions. Baxter IP co-founder Christopher Baxter is especially adroit at drafting software and medical device patents; he also acts as an embedded IP adviser to an expansive roster of Australian and foreign start-ups. Certified licensing professional Jeff Bergmann, smoothly facilitates IP commercialisation projects at Solubility. Providing penetrating strategic guidance on patentability and enforcement, Melissa McGrath has “the proven ability to manage the most difficult litigation efforts, working proactively to solve potential problems before they emerge”; clients applaud her “sharp business acumen and faultless legal knowledge”, as well as her “responsiveness and flexibility”. She recently swapped DibbsBarker for K&L Gates. Director and national practice manager at IPSOLVED, Lachlan Mullane formulates and executes winning patent strategies for many Australian enterprises. Former FAL Lawyers man Jason Watson set up Watson IP in March 2017. He’s a licensing guru who specialises in software innovation.